Brexit- where are we? What has changed? What's the position regarding EU trade marks and designs?
Brexit – Where are we?
The European Union's agreement to a further extension means the UK is scheduled to leave the EU without a deal on 31 October 2019, assuming no further extension is agreed, and that the Withdrawal Agreement negotiated with the EU is not approved by the UK Parliament, before then.
What has Changed?
Despite a lot of debate in Parliament, very little of substance has altered with the overall picture regarding Brexit for some time. Although Theresa May's government negotiated a complete Withdrawal Agreement with the EU, in order to bring it into effect it must be approved by the UK Parliament. Parliament has rejected the Agreement and a parliamentary majority has not been found for any of the other possible Brexit options, including 'no deal'. This leaves all options firmly on the table.
The Position Regarding EU Trade Marks and Designs
The position in relation to intellectual property is, fortunately, clearer. The UK government has published its proposed draft Statutory Instrument to regulate the transfer of rights connected with EU trade marks into the post-Brexit trade mark regime in the UK. This includes commitment on the following:
- Continuity of registered rights. EUTMs and RCDs which are registered prior to exit day will be cloned into UK trade mark or design registrations which will have the same filing, priority and registration dates. There will be no official fee.
- EUTM applications and re-filing in the UK. EUTM and RCD applications which are pending on exit day will not be automatically cloned. The applicant may, within nine months, file a new UK application which will retain the same filing (and priority) date as the EU application.
- Proving use of UK TM registrations cloned out of EUTMs. If exit day falls during the proof of use period, any use evidence relating to a time after exit day must show use in the UK. If the proof of use period ended before exit day, use anywhere in the EU will be acceptable.
- Lapsed UK registrations for which seniority was claimed into EUTMs. Where seniority was claimed from a UK trade mark registration into an EUTM, the cloned UK registration which arises after exit day will continue with the same rights (and same earlier filing date) as if the original UK registration had never lapsed.
Continuity of rights. Under UK law, references to an EUTM or RCD in any document (such as a contract) made before exit day shall, unless there is evidence that the document is not intended to have effect in the UK, be read on and after exit day as including references to the cloned UK mark.
Our Key Recommendation
An EUTM application filed today will not be registered by end October. Until exit day in October, or agreement being reached confirming a transitional period (and later exit day), we recommend that clients dual file UK trade marks simultaneously with EU trade marks so as to obtain registered trade mark protection in the UK at the earliest opportunity. The situation is less critical for designs, as most EU designs filed today will reach registration before the end of October. Nonetheless, many clients are also dual-filing designs in the UK and EU simultaneously.
To ease the cost burden, HLK is offering a 25% discount on our UK filing fees if we are instructed to file the same mark in the UK and EU simultaneously. We will also, on a no-charge basis, create records for:
- the cloned UK registrations which will be created from registered EUTMs, and
- potential UK applications to be based on pending EUTMs.
This service will ensure the best position for our clients on Day One and help mitigate the effects of Brexit.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.